Can a patent expire before it issues?

In certain situations, yes. Ordinarily, the term of a patent begins on the grant date and ends twenty years after the filing date of the patent. If the patent claims priority to an earlier-filed nonprovisional patent application, then the twenty-year term is calculated from the filing date of the earlier-filed application.

However, an unusual situation can arise if a patent claims priority to a patent application that was filed more than twenty years ago. A recent court decision from the Eastern District of Texas found such a situation in U.S. Patent 9,094,694. The application for the ‘694 patent was filed in July 2014, and the patent issued in July 2015. However, the ‘694 patent was a continuation of three previous patent applications, the first of which was filed in July 1995. Because of this, the effective filing date of the ‘694 patent was July 8, 1995 and its grant date was July 28, 2015 — more than twenty years after the effective filing date.

There are circumstances in which a patent’s term can be extended beyond the twenty-year term. For example, if a patent application’s processing is held up due to Patent Office delay, the term of the patent can be extended to account for that delay. However, this opportunity for patent term adjustment is lost if the applicant also causes certain delays during prosecution, such as by taking an extension of time or filing a supplemental amendment after filing an additional amendment.

In the case of the ‘694 patent, the USPTO determined that no patent term adjustment applied. Thus, the term of the patent was not extended beyond the standard twenty-year term. The ‘694 patent also included a terminal disclaimer with respect to patent 8,769,561, which did have a patent term adjustment but which still expired in 2016. Thus, the court determined that the ‘694 patent expired before it granted.

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IP Spotlight provides news and practice tips relating to the legal and business aspects of intellectual property and other intangible assets. Topics include licensing, due diligence, acquisition, compliance and risk management associated with patents, trademarks, copyrights and trade secrets. IP Spotlight is published by Jim Singer of Fox Rothschild LLP.

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Jim Singer is a partner with the law firm of Fox Rothschild LLP, where he focuses on intellectual property acquisition, protection, enforcement and licensing. For more details and contact information, select the "About the Author" link below.

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